Intellectual Property Law

Intellectual property law questions? Ask a lawyer

Ask a Lawyer,
Get an Answer ASAP!

I had a name trademarked and it was in commerce but I did…

Customer Question
I had a name trademarked...
I had a name trademarked and it was in commerce but I did not file the necessary documents to show continued use between 5th and 6th years and the trademark stands cancelled for this name. Can a different entity apply to get this name trademarked?
Submitted: 2 years ago.Category: Intellectual Property Law
Show More
Show Less
Ask Your Own Intellectual Property Law Question
Answered in 6 minutes by:
2/24/2016
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Law Educator, Esq.
Category: Intellectual Property Law
Satisfied Customers: 124,212
Experience: Attorney practicing all aspects of copyright/trademark law
Verified
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
When a trademark is cancelled for non-renewal, then any other person or entity can apply to the USPTO and seek to obtain that trademark. A cancelled mark, even if it was previously used in commerce, is available for anyone to take and use without regard to the previous owner's use and they can register the mark in their name and get the rights to the mark.
Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
My understanding is a trademark is for 10 yrs. I applied for the mark in 2008 and I was supposed to file documents for continued use between 2013 and 2014. Since I did not file this document the name mark was cancelled May 2015. You mean to say that any entity is eligible to apply to get this name trademarked and can they use this for the same purpose that we were in commerce for?
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Thank you for your reply.
Yes, but once the registration was cancelled, it is open for anyone else to use. You would have to reapply to reinstate your trademark to preserve it. If you do not reapply, then anyone can apply for the mark, since it is cancelled and cancelled means no longer valid. So you have to apply to get it reinstated if you want to protect your registered rights to the mark.
Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
Will a international trademark be acknowledged in US courts and in other country courts?
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Thank you for your reply.
Yes an international trademark is enforceable in the US and other countries where they are party to the international treaty on trademarks.
Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
There is a website www.XYA.com that has been in commerce for 10 yrs since 2006 and they haven't applied any trademark to operate this website for all these years. They are operating this website in certain industry, now suddenly some other company pops up in 2016 and tries to get a similar domain name with a different extension (like xya.co/xya.uk) and applies a trademark for this name. What will happen to the 1st gut if the trademark is with the 2nd guy? Does the 1st guy have to cease its operations after all these 10 yrs of operating this website?
IP Lawyer: Law Educator, Esq., Lawyer replied 2 years ago
Thank you for your reply.
The first company using the mark in commerce continuously, even if they do not have a registration, can assert a common law trademark, which gives them limited rights. The limited rights is that if they can prove continued use in commerce they can seek to stop anyone else from infringing on their mark, but they cannot seek the damages they could seek if the mark is registered. If the second person tries to apply for a mark, then the first can file an objection or to cancel the mark based on the first having continuously used the mark in commerce as a common law trademark.
So no, the first guy has a common law trademark still and can seek to stop them from using the mark upon proof the first still uses it in commerce. The first party just cannot seek the statutory damages only a right to stop them from using the mark.
Ask Your Own Intellectual Property Law Question
Was this answer helpful?
Ask Law Educator, Esq. Your Own Question
Law Educator, Esq.
Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 124,212
124,212 Satisfied Customers
Experience: Attorney practicing all aspects of copyright/trademark law

Law Educator, Esq. is online now

A new question is answered every 9 seconds

How JustAnswer works:

  • Ask an ExpertExperts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional AnswerVia email, text message, or notification as you wait on our site. Ask follow up questions if you need to.
  • 100% Satisfaction GuaranteeRate the answer you receive.

JustAnswer in the News:

Ask-a-doc Web sites: If you've got a quick question, you can try to get an answer from sites that say they have various specialists on hand to give quick answers... Justanswer.com.
JustAnswer.com...has seen a spike since October in legal questions from readers about layoffs, unemployment and severance.
Web sites like justanswer.com/legal
...leave nothing to chance.
Traffic on JustAnswer rose 14 percent...and had nearly 400,000 page views in 30 days...inquiries related to stress, high blood pressure, drinking and heart pain jumped 33 percent.
Tory Johnson, GMA Workplace Contributor, discusses work-from-home jobs, such as JustAnswer in which verified Experts answer people’s questions.
I will tell you that...the things you have to go through to be an Expert are quite rigorous.

What Customers are Saying:

Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises!

Gary B.Edmond, OK

My Expert was fast and seemed to have the answer to my taser question at the tips of her fingers. Communication was excellent. I left feeling confident in her answer.

EricRedwood City, CA

I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight.

MichaelWichita, KS

PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent.

Three H.Houston, TX

Anne was extremely helpful. Her information put me in the right direction for action that kept me legal, possible saving me a ton of money in the future. Thank you again, Anne!!

ElaineAtlanta, GA

It worked great. I had the facts and I presented them to my ex-landlord and she folded and returned my deposit. The 50 bucks I spent with you solved my problem.

TonyApopka, FL

Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help.

Mary C.Freshfield, Liverpool, UK

< Previous | Next >

Meet the Experts:

Dimitry K., Esq.

Dimitry K., Esq.

Attorney

561 satisfied customers

I assist my clients with IP questions that arise in their daily course of doing business.

Thomas Swartz

Thomas Swartz

Lawyer

465 satisfied customers

Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.

Ely

Ely

Counselor at Law

461 satisfied customers

Licensed attorney in private practice.

Wilton A. Person

Wilton A. Person

Lawyer

352 satisfied customers

MBA, Experienced and Knowledgeable in Intellectual Property Law

BartEsq

BartEsq

Researcher

192 satisfied customers

Juris Doctor

P. Simmons

P. Simmons

Lawyer

175 satisfied customers

12+ yrs. of legal experience.

ipesq

ipesq

Lawyer

134 satisfied customers

Specializing in patent prosecution, trademark and copyright registration/enforcement.

< Previous | Next >

Related Intellectual Property Law Questions
I would like to register a trademark. I found out that there
I would like to register a trademark. I found out that there is a very similar one that was registered but it looks to be abandoned, can I still register mine? Will this person that tried to register … read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
Can I copy a companies slogan without getting into legal trouble
Can I copy a companies slogan without getting into legal trouble? There is a business SouthernOregonHelpwanted.com "long name... Amazing results" I would like to do that same kind of Idea with a real … read more
Law Educator, Esq.
Law Educator, Esq.
Lawyer
124,212 satisfied customers
I want to use the term "Swiss Army Knife" for a software product;
I want to use the term "Swiss Army Knife" for a software product; as in (just an example) the "Online Chat Swiss Army Knife". I researched that "Swiss Army Knife" is trademarked in several categories,… read more
Wilton A. Person
Wilton A. Person
Lawyer
Juris Doctorate
352 satisfied customers
I have a question about a trademarking a name. I was
Good morning,I have a question about a trademarking a name. I was interested in trademarking the name Parker Hills under class 25 which is clothing, however, I went online and found out there is a bra… read more
Attorney Wendy
Attorney Wendy
Member
Juris Doctorate
724 satisfied customers
Legal help please. Trademark question. I own a set of domain
Legal help please. Trademark question.I own a set of domain names. All are similar and refer to a unique Japanese bakery item that I hope will someday catch on here in the U.S.The websites currently h… read more
Attorney Wendy
Attorney Wendy
Member
Juris Doctorate
724 satisfied customers
How do you dispute a us trademark application. It is
In my search I can see the applicant is from the UK that is the only thing I can see that has been filed… read more
Attorney Wendy
Attorney Wendy
Member
Juris Doctorate
724 satisfied customers
Is the general shape of an item trademarkable? For example
Is the general shape of an item trademarkable? For example if we wanted to make an item in the likeness of a Hennessey bottle (not an actual liquor bottle but lets just say a lamp base) is that OK? We… read more
Damien Bosco
Damien Bosco
Attorney
Doctoral Degree
4,482 satisfied customers
Can I trademark a bathroom plaque with an original quote on
Can I trademark a bathroom plaque with an original quote on it? Would it be important to do this? I sell products with quotes on them and don't want my competitors ripping off of me.I'm new to this, s… read more
INFOLAWYER
INFOLAWYER
Partner
Doctoral Degree
58,659 satisfied customers
Am I infringing on a trademark if we are both in permanent
Am I infringing on a trademark if we are both in permanent makeup they are a famous brand and trademarked Phibrow.com my name is ***** ***** brand is Rhibrow.com and want to trademark it… read more
Damien Bosco
Damien Bosco
Attorney
Doctoral Degree
4,482 satisfied customers
What is the best way to go about registering a trademark?
What is the best way to go about registering a trademark? Should used a lawyer? How do I find a lawyer who does this kind of thing?… read more
Lori
Lori
Juris Doctor
1,315 satisfied customers
I have a question regarding a trademark infringement. Can
Hello, I have a question regarding a trademark infringement. Can you help, please? … read more
ScottyMacEsq
ScottyMacEsq
Doctoral Degree
17,837 satisfied customers
I need to hire an attorney specializing in Trademark Law and
I need to hire an attorney specializing in Trademark Law and would like assistance finding the right person.… read more
Lori
Lori
Juris Doctor
1,315 satisfied customers
I am a distributor of "grey market" consumer products like
I am a distributor of "grey market" consumer products like NIKE Shoes, POLO Ralph Lauren Shirts, Oakley sunglasses, Callaway Golf Clubs, etc. These are all purchased in USA either from the license hol… read more
Alex Reese
Alex Reese
Intellectual Property Attorney
JD
3,460 satisfied customers
I just received this response from the USPTO that I don't understand. The trademar
I just received this response from the USPTO that I don't understand. The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP… read more
ScottyMacEsq
ScottyMacEsq
Doctoral Degree
17,837 satisfied customers
I registered for a federal trademark for the name of a festival
I registered for a federal trademark for the name of a festival and the folks I am working with registered for a state of LA trademark, both for the same name of the festival. There is a cease and des… read more
ScottyMacEsq
ScottyMacEsq
Doctoral Degree
17,837 satisfied customers
received gaf counsel letter about couterfeit watch i was reselling
received gaf counsel letter about couterfeit watch i was reselling on ebay. i originally bought the watch on ebay and have the receipt for it but cant get gaf to understand that i was unaware it might… read more
Attorney Wayne
Attorney Wayne
Attorney-at-Law
JD
1,492 satisfied customers
There was a Rodeo in Mansfield TX called Kowbell Indoor
There was a Rodeo in Mansfield TX called Kowbell Indoor Rodeo and was sold in 2005 to the ISD. I started a Non Profit organization that puts on the Kowbell Cowboy Reunion and have an assumed named cer… read more
Andrea, Esq.
Andrea, Esq.
Attorney
Post-Doctoral Degree
10,512 satisfied customers
I received a letter from the US Customs and Border Patrol
I received a letter from the US Customs and Border Patrol (CBP) stating that they have seised a package that I am expecting due to what amounts to trade mark violation. How can I be reprehensible for … read more
montysimmons
montysimmons
Owner Simmons Patents
Doctoral Degree
328 satisfied customers

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

Show MoreShow Less

Ask Your Question

x